WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Worldwide IP Management Limited v. Pro Spedition / Registration Private, Domains By proxy, LLC / Zen Supplements Ltd
Case No. D2017-2403
1. The Parties
The Complainant is Worldwide IP Management Limited of Warsaw, Poland, represented by Biuro Rachunkowe Warszawa (BRW), Poland.
The Respondents are Pro Spedition of Mannheim, Germany / Registration Private, Domains By proxy, LLC of Scottsdale, Arizona, United States of America / Zen Supplements Ltd of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Names and Registrar
The disputed domain names <perlebleucream.com>, <perlebleuecreme.com> and <perleblueshop.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 6, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 8, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 13, 2017.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on January 4, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on January 16, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company specialized in the management of Intellectual Property whose business is to obtain Intellectual Property rights and license them to third parties, which typically use them for designating fast-moving consumer goods.
The Complainant is the owner of the European Union trademark registration No. 015988546 for PB PERLE BLEUE, filed on October 31, 2016 and registered on April 20, 2017, in classes 3, 35 and 44. The graphic representation of the mark as shown in the trademark certificate is the following:
Creams under the trademark PB PERLE BLEUE are advertised and offered for sale online by a Complainant's licensee via the website published at the domain name <perlebleuecream.com>, which was registered on February 11, 2016.
The first Respondent is Pro Spedition, located in Germany. The second Respondent is Zen Supplements Ltd, located in the United Kingdom.
The disputed domain name <perlebleuecreme.com> was registered by the first Respondent on February 6, 2017. The disputed domain names <perlebleucream.com> and <perleblueshop.com> were registered by the second Respondent on November 8, 2016 and 28, 2016, respectively.
According to the screenshots submitted by the Complainant, which have not been contested by the Respondent, the disputed domain names were pointed in the past to websites where purported PB PERLE BLEUE creams were advertised and offered for sale.
5. Parties' Contentions
The Complainant contends that the disputed domain names are confusingly similar to the trademark PB PERLE BLEUE since they incorporate the mark in its entirety – although misspelled with the elimination of a letter "e" in the disputed domain names <perlebleucream.com> and <perleblueshop.com> – with the addition of the descriptive elements "cream", "shop" and "creme".
The Complainant states that creams designated with the trademark PB PERLE BLEUE have been sold by the Complainant's licensee through the entire European Union starting from the end of June 2016 and that, until the end of 2016, 40,000 units of such creams were delivered to customers.
It also informs the Panel that a website operated by the licensee of the Complainant to advertise genuine PB PERLE BLEUE creams, available at the domain name <perlebleuecream.com>, is operational from June 2016.
The Complainant states that its licensee has sold genuine PB PERLE BLEUE creams exclusively to final individual customers through direct sales, and that it does not sell those products to any third-party entrepreneurs. For these reasons, the Complainant alleges that the Respondents' purported PB PERLE BLEUE creams being offered for sale on the websites at the disputed domain names are counterfeit.
The Complainant further states that the products promoted on the websites at the disputed domain names are sold by an entity identified as "Pro Spedition" located in Germany, or actual sales are made by "Pro Spedition" even if the declared seller is identified as Business Bros Ltd. Meanwhile, original PB PERLE BLEUE creams sold by the Complainant's licensee are delivered to final recipients exclusively by the company Pro Spedition Limited with registered office in Gibraltar.
Therefore, the Complainant states that it cannot be a coincidence that the Respondents have used the same name as the name of the shipping company used by the licensee and that the Respondents must have deliberately chosen that name "Pro Spedition" with the purpose of misleading consumers as to the existence of a business relationship between the Complainant's licensee and the Respondents. As such, customers not satisfied with the quality of the counterfeit products will turn to the real Pro Spedition Limited and the licensee, whose reputation may be consequently tarnished.
The Complainant, therefore, submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names because i) the Respondents have not used the disputed domain names for a bona fide offering of goods or services, since the products sold by the Respondents are counterfeit; ii) the Respondents have not been commonly known by the disputed domain names; and iii) the Respondents' use of the disputed domain names is purely commercial and their apparent purpose is to sell counterfeit products and to divert consumers from a legitimate source of genuine products.
The Complainant points out that the Respondents registered the disputed domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct since, besides the disputed domain names, they also registered 7 additional domain names featuring the trademark PB PERLE BLEUE or variations thereof in other country code Top-Level Domains ("ccTLDs"), namely <perlebleuecreme.se>, <perlebleuecreme.de>, <perleblueshop.de>, <perleblueshop.co.uk>, <perle-bleue.nl>, <perle-bleue.it> and <perlee-bleue.de>.
The Complainant further states that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor and that the Respondents intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondents' websites or of a product or service therein.
The Complainant concludes that the sole purpose of the registration of the disputed domain names was to disrupt the Complainant's business by selling counterfeit products and misleading customers as to the existence of a business connection between the Complainant and the Respondents.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Preliminary procedural issue: consolidation of Respondents
Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)".
In the case at hand, the Complainant requests the consolidation of the named Respondents and the disputed domain names based on the following circumstances:
i) The same company "Business Bros Ltd" has been indicated as an operator of the websites at both the disputed domain names <perlebleuecreme.com>, registered by the first Respondent, and <perlebleucream.com>, registered by the second Respondent;
ii) The first Respondent has been indicated as an operator of the website at the disputed domain name <perleblueshop.com>, registered by the second Respondent, and processed also a payment of an order placed through that website;
iii) The websites published at "www.perlebleuecreme.com/pl", based on the disputed domain name <perlebleuecreme.com>, registered by the first Respondent, and "www.perlebleucream.com/ro", based on <perlebleucream.com>, registered by the second Respondent, have identical layouts and graphics;
iv) The disputed domain names <perlebleuecreme.com> and <perlebleucream.com> resolve to the same IP address, to which also the disputed domain name <perleblueshop.com> resolved in the past;
v) Additional similar domain names and websites operated by the first Respondent resolve to the same IP address;
vi) Pages for placing an order on the websites to which <perlebleuecreme.com> and <perlebleucream.com> resolve have identical layouts;
vii) The company mentioned as an operator of the websites at the disputed domain names <perlebleuecreme.com> and <perlebleucream.com>, i.e. Business Bros Ltd, is being impersonated by the actual registrants of the disputed domain names, since said company does not have anything to do with the sale of cosmetics and is now operating under the name DSF Group Ltd, under the same company number.
The Panel finds that the elements highlighted by the Complainant and referenced above undoubtedly demonstrate a connection amongst the disputed domain names and the respective owners. Indeed, all the disputed domain names incorporate the core of the Complainant's trademark and have been used in connection with similar websites promoting the sale of purported PB PERLE BLEUE creams. Moreover, the commonalities amongst the entities mentioned on the websites indicated above clearly demonstrate that the disputed domain names are actually held by the same entity or at least by a group of individuals or entities acting in concert.
In view of the above, this Panel concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
Therefore, the Panel will now proceed to a decision on the merits of the case.
B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a valid trademark registration for the figurative mark PB PERLE BLEUE, as highlighted in the paragraphs above. The Complainant's trademark consists of the words "Perle Bleue" written in white letters with a gold spot between them, above which there is a stylized, reversed letter "p" in gold, joined to a gold letter "b".
With reference to the assessment of identity or confusing similarity in cases where a complainant relies on trademark registrations containing design elements, section 1.10 of the WIPO Overview 3.0 states that:
"Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element.
On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show "rights in a mark" for further assessment as to confusing similarity.
However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant's trademark registration is insufficient by itself to support standing under the UDRP. [See in particular section 1.2.3 of the WIPO Overview 3.0.]
To the extent the complainant could nevertheless establish UDRP standing on the basis of a mark with design elements, the existence of such elements (or a disclaimer) would be relevant to the panel's assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term".
The Panel finds that the core of the Complainant's trademark is constituted by the denominative element "Perle Bleue", which is clearly recognizable in the disputed domain names. Indeed, the disputed domain names entirely reproduce the wording "Perle Bleue" with the mere addition of the descriptive terms "cream", "creme" and "shop" and, as far as the disputed domain names <perlebleucream.com> and <perleblueshop.com> are concerned, the elimination of one letter "e".
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which it has established rights according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondents, by not having submitted a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondents and the Complainant has not authorized the Respondents to register or use its trademark or the disputed domain names.
Moreover, there is no evidence that the Respondents might have been commonly known by the disputed domain names or that they might have used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.
On the contrary, the evidence submitted by the Complainant, which have not been challenged by the Respondents, demonstrates that the Respondents have used the disputed domain names to promote the sale or purported PB PERLE BLEUE products – likely counterfeit – unduly suggesting an affiliation with the Complainant that does not exist.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant is required to demonstrate that the Respondents registered and used the disputed domain names in bad faith.
In the assessment of the Respondent's bad faith at the time of registration, the Panel considers the following circumstances:
i) The European Union trademark on which the Complainant relies in this case was filed on October 31, 2016, before the registration of the disputed domain names, which occurred between November 8, 2016 and February 6, 2017;
ii) The Complainant has submitted a declaration issued by its licensee's shipment company in which it is stated that the first deliveries of PB PERLE BLEUE products were made at the end of June 2016 and that over 40,000 deliveries, with an average of 8,000 products per month, were made in 2016;
iii) The Complainant has provided evidence of use of the website at the domain name <perlebleuecream.com>, which was registered on February 11, 2016, to advertise and offer for sale PB PERLE BLEUE creams;
iv) The disputed domain names are confusingly similar to the Complainant's trademark;
v) The screenshots on records show that the disputed domain names were used in the past to promote the sale of purported PB PERLE BLEUE creams.
The elements cited above suggest that the Respondents' registration of the disputed domain names could not amount to a mere coincidence, and that, on the contrary, the Respondents were in all likelihood aware of the Complainant's trademark at the time of the registration of the disputed domain names.
Moreover, the Panel finds that the Respondents acted in opportunistic bad faith when registering the disputed domain names, as they are so obviously connected with the Complainant's PB PERLE BLEUE products that their selection by the Respondents, which have no connection with the Complainant, suggests the disputed domain names have been registered with a deliberate intent to create an impression of an association with the Complainant and/or its licensee. See, along these lines, General Motors LLC v. desgate, WIPO Case No. D2012-0451 and RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610.
The Panel also finds that the evidence provided by the Complainant as to the prior use of the disputed domain names demonstrates that the Respondents intended to attract Internet users to their websites for commercial gain, by causing confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of their websites and the products available therein according to paragraph 4(b)(iv) of the Policy.
At the time of the drafting of the decision, the disputed domain names are not pointed to active websites. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the case at hand, in view of i) the Respondents' registration of domain names confusingly similar to the Complainant's trademark, ii) the absence of any documented rights or legitimate interests of the Respondents in the disputed domain names, iii) the Respondents' failure to respond to the Complaint and iv) the evidence provided by the Complainant as to the prior use of the disputed domain names, the Panel finds that the Respondents' current lack of use of the disputed domain names also amounts to bad faith.
Moreover, the Panel finds paragraph 4(b)(ii) of the Policy also applicable in this case as the Respondents have registered the disputed domain names in order to prevent the Complainant from reflecting its mark in corresponding domain names and the Respondents have engaged in a pattern of such conduct since they registered 10 domain names incorporating the core of the Complainant's trademark. As found in Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; and Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003 0602, a pattern of conduct as required in paragraph 4b(ii) of the Policy typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single complainant.
In light of the above, the Panel finds that the Complainant has proven that the Respondents registered and are using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <perlebleucream.com>, <perlebleuecreme.com> and <perleblueshop.com> be transferred to the Complainant.
Date: January 30, 2018